DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-15 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Instant application is a U.S. National Stage Entry of PCT/IL2022/050729, filed 07/06/2022. PCT/IL2022/050729 claims priority of foreign application IN202111030414, filed 07/06/2021. Therefore, the effective filing date is 07/06/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 reads “… and where the compound of the general formula (I) may also be an N-oxide or salt…” and should read “…or an N-oxide or salt thereof…” (emphasis added).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 7-9, and 11-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a combination comprising the anthranilamide compounds listed in claim 2, does not reasonably provide enablement for a combination comprising compounds of formula (I). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
To be enabling, the specification of the patent application must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fd. Cir. 1993). Explaining what is meant by "undue experimentation," the Federal Circuit has stated that:
The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which experimentation should proceed to enable the determination of how to practice a desired embodiment of the claimed invention. PPG v. Guardian, 75 F.3d 1558, 1564 (Fed. Cir. 1996). As pointed out by the court in In re Angstadt, 537 F.2d 498 at 504 (CCPA 1976), the key word is "undue", not "experimentation".
The factors that may be considered in determining whether a disclosure would require undue experimentation are set forth In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 wherein, citing Ex parte Forman, 230 USPQ 546 (Bd. Apls. 1986) at 547 the court recited eight factors:
1- the quantity of experimentation necessary,
2- the amount of direction or guidance provided,
3- the presence or absence of working examples,
4- the nature of the invention,
5- the state of the prior art,
6- the relative skill of those in the art,
7- the predictability of the art, and
8- the breadth of the claims
These factors are always applied against the background understanding that scope of enablement varies inversely with the degree of unpredictability involved. In re Fisher, 57 CCPA 1099, 1108, 427 F.2d 833, 839, 166 USPQ 18, 24 (1970). Keeping that in mind, the Wands factors are relevant to the instant fact situation for the following reasons:
The nature of the invention
The nature of the invention relates to a combination comprising compounds of formula (I) in claim 1. Such compounds are useful for insecticidal compositions. This invention is also directed to compositions and methods comprising said compounds.
Predictability of the art
There are no novel compounds provided in the specification, and the hypothetical compounds in claim 1 would be unpredictable in terms of one skilled in the art being able to synthesize every possible compound claimed in instant claim 1. It is well established that “the scope of enablement varies inversely with the degree of unpredictability of the factors involved,” and physiological activity is generally considered to be an unpredictable factor. See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
In terms of the law, MPEP 2107.03 states “evidence of pharmacological or other biological activity of a compound will be relevant to an asserted therapeutic use if there is a reasonable correlation between the activity in question and the asserted utility. Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (Fed. Cir. 1985); In re Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980); Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980).” If correlation is lacking, it cannot be relied upon, Ex parte Powers, 220 USPQ 924; Rey-Bellet and Spiegelberg v. Engelhardt v. Schindler, 181 USPQ 453; Knapp v. Anderson, 177 USPQ 688. Indeed, the correlation must have been established “at the time the tests were performed”, Hoffman v. Klaus, 9 USPQ2d 1657. However, Applicant would be enabled for those anthranilamide compounds listed in claim 2, since the prior art teaches that these specific compounds exist and are useful in insecticidal compositions.
Level of skill in the art
An ordinary artisan in the area of insecticidal development would have experience in synthesizing and screening chemical compounds for particular activities, such as a chemist. Screening of new insecticidal compositions, while complex, is routine in the art. The process of finding new insecticides that have in vitro activity against a particular biological target, (i.e., receptor, enzyme, etc.) is well known. Additionally, while high throughput screening assays can often be employed, developing a method, as claimed, is generally not well-known or routine, given the complexity of certain biological systems.
4. The breadth of the claims
The scope of the claims involves compounds of formula (I), shown below.
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Claim 1 is very broad in the number of variables and the options of substituents for each variable. There is an extremely large amount of hypothetical compounds included in claim 1.
5. The amount of direction provided, the presence or absence of working examples, and the quantity of experimentation necessary
The specification does not provide the synthesis of any compounds of formula (I).
Since there are no synthesis methods taught in the specification, one would have to create new synthesis methods to develop the compounds of formula (I), if such compounds are able to be synthesized, given the vast difference in size and electronegativity of the possible variables.
It would require one skilled in the art, such as a chemist, to perform thousands of reactions to determine which compounds of formula (I) can be prepared and would require one to develop synthesis methods, since none are provided in the specification. This is undue experimentation given the limited guidance and direction provided by Applicants.
Accordingly, the instant claims do not comply with the enablement requirement of 35 U.S.C. 112(a), since to practice the claimed invention a person of ordinary skill in the art would have to engage in undue experimentation, with no assurance of success.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 11, and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 has the phrase “…selected from the group comprising…”. The transition word “comprising”, rather than “consisting of”, renders the claim indefinite according to MPEP 2173.05(h): “A Markush grouping is a closed group of alternatives, i.e., the selection is made from the group “consisting of” (rather than “comprising” or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281.” See also MPEP § 2111.03. The correct phrase is “selected from the group consisting of”.
Claim 11 recites “the insecticidal combination of claim 1 …are applied jointly or in a succession.” However, neither claim 1 or claim 11 is a method claim, and it is unclear what the insecticidal composition is being “applied” to. This rejection would be overcome if claim 11 was rewritten as a method claim that comprises a step of administering or applying the composition.
Regarding claim 14, the phrase “chewing pests” renders the claim indefinite, because “chewing pests” are not defined by the claims or the specification, thereby rendering the scope of the claims unascertainable. The specification, on page 14, gives nonlimiting examples of chewing pests that may be included in some embodiments. However, the “chewing pests” are not limited to these examples. This rejection would be overcome if “chewing pests” was defined.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 10-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Corte et al. (US 20230053477 A1), hereinafter referred to as reference ‘477, with an effective filing date of 31 December 2019.
Reference ‘477 teaches, in claim 1, an insecticidal combination comprising an anthranilamide compound of formula (I) shown below and an insecticidal compound.
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It is taught, in claims 2-6, that the anthranilamide compound is to be selected from chlorantraniliprole, cyantraniliprole, tetraniliprole, tetrachlorantraniliprole, bromantraniliprole, and cyclaniliprole. In claim 13, it is taught that the insecticidal compound is tau-fluvalinate, as in instant claims 1-6. Claim 14 of reference ‘477 teaches that the insecticidal mixture exhibits synergistic effects, as in instant claim 7.
Reference claim 21 teaches that the weight ratio of the anthranilamide compound of formula (I), and tau-fluvalinate is from 1:50 to 1:1, as in instant claim 8. Claim 26 teaches that the insecticidal mixture comprises 1-250 g/l of chlorantraniliprole and 1-1000 g/l of tau-fluvalinate, as in instant claim 10. Reference claims 27-29 teach that the insecticidal compounds are applied jointly or in a succession, that the mixture further comprises an agriculturally acceptable carrier, and that the mixture further comprises at least one surfactant, solid diluent, liquid diluent, or a combination thereof, as in instant claims 11-13.
Reference ‘477 teaches, in claim 32, a method for controlling insects comprising contacting the insect or their food supply, as in instant claim 14. It is taught in paragraphs [0132], [0136], and [0137], that the method targets pests of the order Coleoptera, Lepidoptera, and Orthoptera, as in instant claim 15.
The applied reference has a common inventor and applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim Rejections - 35 USC § 102 or 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 6, 7, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Caldwell et al. (US 20170347659 A1).
Caldwell et al. teaches, in claims 1, 3, and in paragraphs 43 and 59, an insecticidal composition comprising chlorantraniliprole, cyantraniliprole, and tetraniliprole, and further comprising an insecticide which may be tau-fluvalinate. Caldwell et al. does not teach a specific embodiment comprising chlorantraniliprole, cyantraniliprole, or tetraniliprole and tau-fluvalinate.
However, MPEP 2131.02 III states: “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).”
Therefore, one would at once envisage, or alternatively, find it prima facie obvious to make, a combination comprising chlorantraniliprole, cyantraniliprole, or tetraniliprole, with tau-fluvalinate as the insecticide, since there is a short list, in claim 3, of possible insecticides to be used in the invention, as in instant claims 1-4, 6, and 11.
The composition is taught, in claims 1, 9, and 10, to be a liquid agricultural composition for use on crops that comprises a suitable carrier system, wherein the method induces mortality of pests, as in instant claims 12-14.
Regarding instant claim 7, the synergistic effects would be an inherent property of the composition of the prior art. Products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
Claims 1-7 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Takemoto et al. (WO 2021117484 A1), published 06/17/2021, cited by Applicant in the IDS.
Takemoto et al. teaches, in claim 1, an agricultural composition comprising a polar organic solvent and a ryanodine receptor modulator. It is taught, in claim 5, that the ryanodine receptor modulator is chlorantraniliprole or cyantraniliprole. Other ryanodine compounds of the invention are taught to include cyclaniliprole and tetraniliprole. It is taught, in claims 3, 6, and 7, that the composition further comprises a pesticide selected from tau-fluvalinate, esphenvalerate, or etofenprox. Takemoto et al. does not teach a specific embodiment comprising chlorantraniliprole, cyantraniliprole, cyclaniliprole, or tetraniliprole and tau-fluvalinate.
However, MPEP 2131.02 III states: “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).”
Therefore, one would at once envisage, or alternatively, find it prima facie obvious to make, a combination comprising chlorantraniliprole, cyantraniliprole, cyclaniliprole, or tetraniliprole and tau-fluvalinate, since there is a short list of only three additional insecticidal compounds, in claim 7, to be used in the invention, as in instant claims 1-6 and 11-13.
Regarding instant claim 7, the synergistic effects would be an inherent property of the composition of the prior art. Products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
Takemoto et al. teaches, in claim 9, a method of controlling pests comprising treating the soil with said composition, as in instant claim 14.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code can be found above.
Claim 9 is rejected under 35 U.S.C. 103 as being obvious over Corte et al. (US 20230053477 A1), hereinafter referred to as reference ‘477, with an effective filing date of 31 December 2019, as applied to claims 1-8 and 10-15 above.
The applied reference has a common inventor and applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Reference ‘477 teaches, an insecticidal composition with a weight ratio of the anthranilamide compound of formula (I), and taufluvalinate is from 1:50 to 1:1. See above rejection.
Reference ‘477 fails to specify a ratio of 1:4 to 1:1, as in instant claim 9.
However, MPEP 2144.05 I states: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)”. Therefore, since the claimed ranges lie inside the ranges disclosed by the prior art, instant claim 9 is rendered prima facie obvious.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 5, 8-10, and 15 are rejected under 35 U.S.C. 103 as unpatentable over Caldwell et al. (US 20170347659 A1).
Caldwell et al. teaches an insecticidal composition comprising chlorantraniliprole, cyantraniliprole, or tetraniliprole, and tau-fluvalinate. See above rejection.
In paragraph [0043], it is taught that the ratio of tetraniliprole and to the insecticide, being tau-fluvalinate, is 15:1 to 1:15. Regarding the specific amounts of anthranilamide compound to tau-fluvalinate in instant claims 8 and 9, MPEP 2144.05 I states: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”. Therefore, since the ratios lie inside that taught in the prior art, they are rendered prima facie obvious.
Regarding the specific amounts of chlorantraniliprole and tau-fluvalinate in instant claim 10, MPEP 2144.05 II states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. Therefore, the determination of specific concentrations of a prior art composition is not patentably new.
Regarding the use of cyclaniliprole in instant claim 5, MPEP 2144.06 II states: “In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958)”. Therefore, since the prior art teaches the use of chlorantraniliprole, cyantraniliprole, and tetraniliprole in the composition, and cyclaniliprole is a known equivalent of these, the instant composition is rendered prima facie obvious by the prior art, since it is simply substituting a compound with an art-recognized equivalent.
Caldwell et al. teaches, in paragraph [0002] that the composition can be used to control rootworms, but fails to teach the method of use against pests in the order of Coleoptera Lepidoptera, or Orthoptera, as in instant claim 15.
However, it would prima facie obvious to one of ordinary skill in the art to use a known pesticidal composition on any other pests, including those in the order of Coleoptera Lepidoptera, or Orthoptera.
One would have a reasonable expectation of success using a pesticidal composition, which is said to control rootworms, on other pests, since the ingredients are known in the art to be pesticides or insecticides.
Claims 8-10 and 15 are rejected under 35 U.S.C. 103 as unpatentable over Takemoto et al. (WO 2021117484 A1), published 06/17/2021, cited by Applicant in the IDS.
Takemoto et al. teaches an agricultural insecticidal comprising chlorantraniliprole, cyantraniliprole, cyclaniliprole, or tetraniliprole and tau-fluvalinate. See above rejection.
Regarding the specific amounts of anthranilamide and tau-fluvalinate in instant claims 8-10, MPEP 2144.05 II states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. Therefore, the determination of specific concentrations of a prior art composition is not patentably new.
Takemoto et al. teaches, in claim 9, a method for controlling pests comprising treating the soil with the insecticidal composition, but fails to teach the method of use against pests in the order of Coleoptera Lepidoptera, or Orthoptera, as in instant claim 15.
However, it would prima facie obvious to one of ordinary skill in the art to use a known insecticidal composition on any other pests, including those in the order of Coleoptera Lepidoptera, or Orthoptera.
One would have a reasonable expectation of success using a pesticidal composition, which is said to control pests and insects, on other pests, since the ingredients are known in the art to be insecticides.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-15, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 51, 53-56, 65, 67, and 69 of copending Application No. 17/789,896 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Application ‘896 teaches, in claims 51 and 54-56, an insecticidal composition comprising chlorantraniliprole, cyantraniliprole, or cyclaniliprole and either tau-fluvalinate, spirotetramat, novaluron, or emamectin benzoate. Therefore, the scope of Application ‘896 overlaps with that of instant claims 1-5, and it would be obvious to one of ordinary skill to select tau-fluvalinate from a short list of insecticidal compounds, and to try all combinations from this list. Regarding instant claim 7, the claimed synergistic effect would be an inherent property of the compositions of Application ‘896. See MPEP 2112. Claim 53 of Application ‘896 teaches that the ratio of anthranilamide compound to insecticide is 1:100 to 100:1, which overlaps with instant claims 8 and 9. Reference claims 65, 67, and 69 teach that the composition comprises 50-5000 g anthranilamide compound and 1-250 g of insecticidal compound in 1-1000 L of a mixture for agricultural use that kills or prevents feeding of insects and pests, which overlaps with instant claims 10-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RILLA M SAMSELL whose telephone number is (703)756-5841. The examiner can normally be reached Monday-Friday, 7-3.
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/R.M.S./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624